Professional Documents
Culture Documents
Background
The author
Before the rise of Islam there was no formal judicial
system. Disputes which arose between the members of a † Bashar H. Malkawi is Associate Professor of Law
tribe were customarily settled by referring the disputes to at the University of Sharjah, United Arab Emi-
the leader of the tribe.1 In resolving disputes, the leader rates.
typically resorted to amicable means, including medi-
This article
ation. The leader endeavoured to reach a solution of a
* Email: bmalkawi@sharjah.ac.ae. The author would like to thank Professor reasoning). These are the authoritative sources of jurisprudence
David A. Gantz for his guidance. Additional thanks to the editor of (usul al-fiqh). See Raj Bhala ‘Theological Categories for Special and
JIPLP, editorial staff and the two expert referees for their advisement and Differential Treatment’ (2002) 50 U Kan L Rev 635, 680; John Walbridge
insights into this article. ‘Logic in the Islamic Intellectual Tradition: The Recent Centuries’ (2000)
1 See Faisal Kutty ‘The Shari’a Factor in International Commercial 39(1) Islamic Stud. 55, 68.
Arbitration’ (2006) 28 Loyola LA Int’l and Comp L Rev 565, 589– 90. 4 Qur’an 4:35.
2 Ibid. 5 Charles N Brower and Jeremy K Sharpe ‘International Arbitration and
3 The law in Islam may be thought of as being composed of at least two the Islamic World: The Third Phase (2003) 97 AJIL 643; S Breckenridge
parts: revealed and non-revealed. The revealed form of Shari’a has two Thomas ‘International Arbitration: A Historical Perspective and Practice
proper sources: the Qur’an (the holy book) and the sunna (traditions Guide Connecting Four Emerging World Cultures: China, Mexico,
based on the hadith, sayings and actions of the prophet). Non-revealed Nigeria, and Saudi Arabia’ (2006) 17 Am Rev Int’l Arb 183, 206– 12;
sources of Shari’a, developed by Muslim jurists after the revelation of the Joshua F Berry ‘The Trouble We Have with the Iraqis is US: A Proposal
Qur’an and the sunna, include ijma (consensus of Muslim scholars on a for Alternative Dispute Resolution in the New Iraq’ (2005) 20 Ohio St J
point of law) and qiyas (a sub-ijtihad species of strict analogical on Disp Resol 487, 504.
# The Author (2013). Published by Oxford University Press. All rights reserved. doi:10.1093/jiplp/jps210
Bashar H. Malkawi . The feasibility of ADR to resolve IP disputes in Jordan ARTICLE 147
means of settlement of disputes, particularly commer- isms. Med-arb combines the elements of mediation
cial disputes, are deeply rooted in Muslim and Arab and arbitration, such that a neutral and impartial third
traditions and have long been implemented in practice. party serves as a mediator, but if the parties are unable
Despite references to amicable means of settling dis- to agree to a settlement, the third party takes on the ar-
putes in Sharia and what social norms would otherwise bitrator role. In mini-trials, the parties select and then
suggest, resort to the courts in Arab countries is cur- provide the neutral advisor with background informa-
rently popular.6 Courts are used to settle a myriad of tion and briefs that will be presented.13 This process
cases involving property, marriage, landlord-tenant, indicates the strengths and weaknesses of each party’s
commerce, and labour issues.7 In some cases, people case and the likelihood of settling the dispute. Collect-
prefer to bring an action before the courts as part of a ively, these forms are known as alternative dispute reso-
bargaining strategy to obtain concessions from parties lution (ADR)—an umbrella term used to encompass a
to a case.8 Courts in Arab countries refuse to dismiss wide variety of practices.
frivolous or inappropriate cases, as compared to the This article discusses two specific issues relating to
United States.9 Easy access to courts with lower fees for the use of ADR for the resolution of intellectual prop-
case registration and lower attorney fees contribute to erty disputes: (1) the reasons why an owner or user of
court overload in Arab countries.10 In addition, the intellectual property rights might prefer to resolve dis-
territorial boundaries. ADR offers parties a range of rendering the case useless or reducing the patent’s life-
valuable advantages over litigation. An owner of intel- span and affecting the patent holder’s profitability.20
lectual property may use ADR to settle an intellectual Arbitration and other ADR mechanisms can signifi-
property case for many of the same advantages or cantly reduce the costs of settlement. Typical intellec-
reasons that ADR generally offers in non-intellectual tual property litigation often spans several years with
property cases. attorney fees and damage awards commonly in hun-
The first advantage relates to certainty. Intellectual dreds of millions of dollars. Studies indicate that liti-
property licensing contracts generally involve parties gating a patent case costs two to five million US
from different countries. These contracts may involve dollars.21 Copyright and trade mark cases tend to cost
the laws and courts of several countries, which creates somewhat less than patent cases because they are less
ambiguity in terms of the governing law and proper technical. Although arbitrators’ fees can be quite high,
jurisdiction.17 Accordingly, one of the primary reasons the overall costs are usually lower because arbitration is
for including a contractual clause mandating ADR in general a shorter process than litigation.22 Thus
rather than litigation of any intellectual property there are cost savings associated with arbitration and
dispute is to provide the parties with the certainty that, other ADR mechanisms when compared to litigation.
in the event of a dispute, they will be submitting their The comparative advantage of ADR mechanisms is
beyond the scope of what is necessary to establish their there are legal hurdles in that intellectual property laws
case or the actual misappropriation. Accordingly, secret lack specific statutory language that would guarantee
information which was not infringed could be jeopar- the arbitrability of copyright, trade mark and patent
dized. By the same token, a defendant defending himself disputes. Second, there are extra-legal hurdles relating
against an owner’s claim may be forced to disclose and to the context of intellectual property disputes because
identify trade secrets under his possession to prove that they do not arise in a contractual relationship, Jordan-
they vary from those owned by the owner or that the ian intellectual property laws are recent or Jordan’s
trade secrets were acquired independently. In such a situ- ADR mechanisms are still in their early stages of devel-
ation, the defendant endangers his own trade secrets by opment.
disclosing them to an ill-intentioned plaintiff. Because ar-
bitration and mediation are by definition private, the Legal hurdles
confidentiality of such information typically is easier to
The question as to what matters can be arbitrated
ensure than in public court adjudication.25 The arbitrator
becomes problematic when one considers intellectual
is under an obligation not to disclose confidential infor-
property rights.31 Some hold the view that all issues in-
mation involved in the dispute.26 In arbitration and me-
volving intellectual property rights in Jordan are arbi-
diation, even the existence of the dispute can remain
trable.32 However, there is evidence suggesting that
no explicit distinction between invalidity of intellectual tion is based on the fact that these are purely private
property rights raised as a defence against an infringe- issues pertaining to the interpretation of an agree-
ment claim and an attempt to revoke the entire intel- ment, and they are governed by a licensing agree-
lectual property right, in which case only the former ment, rather than public interest issues, such as
may be arbitrable.36 Moreover, issues of lapse of protec- validity and revocation questions, that fall within the
tion and cancellation of a registered intellectual prop- jurisdiction of the Patents Registrar of the Ministry
erty right fall within the jurisdiction of the High Court of Industry and Trade, the National Library Depart-
of Justice, Court of First Instance or the Patents Regis- ment for copyright or Registrar of Trade Marks.
trar.37 These issues must be entered into a public regis- However, it is unclear if the award issued by an arbi-
ter and inherently involve public interest. Therefore, trator is final and binding only between the parties
the ultimate authority for determining intellectual to the arbitration or it will have effect on any other
property rights lies in the State authority or judiciary. person.41 Also, an open question arises as to whether
While Jordan’s intellectual property laws are silent intellectual property issues can be subject to arbitra-
on the arbitrability of intellectual property rights, the tion absent an underlying contractual arrangement.
Arbitration Law widens the scope of arbitration. Arbi- At any rate, Jordanian courts have not ruled on what
tration can cover any legal dispute whatever the legal intellectual property issues can be arbitrated. Addition-
36 See for example the Patent Law, supra note 17, art. 30. 40 In contrast, the U.S. Patent Act authorizes voluntary, binding arbitration
37 Patent Law, supra note 17, art. 30; Copyright Law, supra note 17, art. 50. of patent validity and infringement issues: see U.S. Patent Act, 35 U.S.C.
38 Arbitration Law of Jordan No. 31 of 2001, art. 3, Official Gazette No. Section 294(a).
4496 (2001). The different schools of Islamic legal thought also have 41 Decisions made the Patent Act are not binding on anyone other than the
different opinions regarding the type of matters that may be arbitrated. parties to the arbitration: U.S. Patent Act, 35 U.S.C. Section 294(a);
The Hanafis believe that arbitration should only be utilized when dealing William Grantham, The Arbitrability of International Intellectual
with the private rights of parties in commercial or proprietary matters. Property Disputes, 14 Berkely J. Int’l L. 173 (1996).
The Hanbalis and Shafi’is allow arbitration in all commercial cases, but 42 The number of cases settled through court-administered mediation in
not in any other cases. The Malikis, on the other hand, allow arbitration 2011 reached 1,395 cases. Those cases involved labour, insurance, lease,
to be applied to non-commercial cases as well. However, all four schools and banking disputes. See The Jordanian Judicial Council, above, n 20,
of Islamic thought agree that arbitration cannot be used in those disputes 99 – 103. No figures are available as to the number of intellectual property
which a judge alone is competent to decide. See Khalid Rashid, cases settled through ADR whether court-sponsored or otherwise.
Alternative Dispute Resolution in the Context of Islamic Law, 8 43 Arbitration Law of Jordan, supra note 38, Art 48.
Vindobona J. Int’l Com. L. 95, 104 (2004). 44 Ibid, Art 49.
39 Id. art. 9.
Bashar H. Malkawi . The feasibility of ADR to resolve IP disputes in Jordan ARTICLE 151
45 Raj Bhala ‘Discovering Great Opportunity in the Midst of Great Crisis: and Partners Concept Paper on Developing a Sustainable IP Judicial
Building International Legal Frameworks for a Higher Standard of Living: Training Program (United States Agency for International Development,
Doha Round Betrayals’ (2010) 24 Emory Int’l L Rev 147, 180. Washington, DC 2007) 5 (Although the public is confident when it
46 Robert M Hirning ‘Contributory and Vicarious Copyright Infringement comes to judicial fairness and integrity, this confidence falls short when
in Computer Software: Harming One Form of Intellectual Property by assessing judges’ technical capacity and ability to deal with novel laws
Protecting Another’ (2006) 6(1) Chicago-Kent J Intell Prop 10, 21 –23. and issues such as IPR. Judicial enforcement in IP cases in Jordan
47 Copyright Law of Jordan, above, n 16, Arts 46, 47. remains poor and courts take years to settle conflicts and often provide
remedies wholly-inadequate to the goal of deterrence of criminal acts).
48 D Alan Redfern ‘Arbitration and the Courts: Interim Measures of
Protection—Is the Tide about to Turn?’ (1995) 30 Tex Int’l LJ 71, 83. See 51 Wuwei-Hua ‘International Arbitration of Patent Disputes’ (2010– 11) 10 J
also Alain Fré ‘Delaying Tactics in Arbitration’ (2005) 594 Disputes Marshall Rev Intell Prop L 384, 389. The activities of the Arab Intellectual
Resolution Journal 6– 7 (2005). Property Mediation and Arbitration Society include training courses,
publications, and using ADR means to settle intellectual property
49 Martin A Frey ‘Does ADR Offer Second Class Justice?’ (2001) 36 Tulsa LJ
disputes: Arab Intellectual Property Mediation and Arbitration Society
727, 734– 35. (In mediation, the third party is neutral and is invited to
‘The Activities of AIPMAS’ AIPMAS.org.
participate in the process. Mediation has been a private process as the
parties hire and pay the mediator. In arbitration, the disputants come 52 Mladen Singer ‘Commercial Arbitration as a Means for Resolving
before a third party, the arbitrator.) Industrial Property and Transfer of Technology Disputes’ (1996) 3 Croat
Arbit Yearbook 107, 116 (citing the American Arbitration Association
50 Jordanian judges also lack sufficient understanding of the complicated
and WIPO Arbitration and Mediation Center).
legal and technological issues involving intellectual property cases: Tabbaa
152 ARTICLE Journal of Intellectual Property Law & Practice, 2013, Vol. 8, No. 2
ment on Trade-Related Aspects of Intellectual Property Instance.59 In addition to these judges, the Minister of
Rights (TRIPS) and being taken off the US watch list Justice may nominate ‘Special Mediators’ and private
of Special 301 helped Jordan accede to the WTO.53 mediators approved by the court to settle referred dis-
In light of its intellectual property record, Jordan putes.60 These ‘Special Mediators’ are likely to be
needs to demonstrate publicly that it effectively enforces former elder statesmen or high-ranking judges held in
intellectual property rights. Efforts by the Jordanian gov- high societal esteem.61 Thus, this law provides for three
ernment to protect foreign intellectual property interests types of mediators as a voluntary alternative to litiga-
in Jordan have made front-page news.54 Through this tion: judges, special mediators and private mediators.
kind of publicity, Jordan sends a deterrent message to The principal objectives of the mediation requirement,
potential infringing third parties. Moreover, many which the Mediation Law hopes to attain, are the re-
lawyers in Jordan automatically resort to litigation to duction to the inflow of new cases which would allevi-
resolve intellectual property issues.55 The choice to liti- ate the number of cases burdening the court system, in
gate may also be due to the lack of familiarity with ADR particular small claims, while at the same time granting
methods. Jordan’s laws and practices thus seem to en- parties a simpler and faster means of dispute resolution
courage intellectual property holders to pursue violators with clearly defined costs and timeframes.
through public judicial vindication. Historically, arbitration, the principal form of alter-
53 Gary G Yerkey ‘U.S., Jordan Hold Talks in Effort to Avoid Sanctions over 62 Charles N Brower and Jeremy K Sharpe ‘International Arbitration and
IP Protection’ (1998) 15 Int’l Trade Rep (BNA) 661; Gary G Yerkey ‘U.S. the Islamic World: The Third Phase’ (2003) 97American Journal of
Removes Jordan from “Watch List” of Special 301 Nations Failing to International Law 643 (the legal community throughout the Arab world
Protect IP’ (1999) 16 Int’l Trade Rep (BNA) 2047. is still manifesting its hostility to transnational arbitration mainly as a
54 Suha Ma’ayeh ‘Improved IPR Enforcement Gets Mixed Reviews’ Jordan result of the great publicity devoted to the criticism of certain
Times (United States Embassy Press Release 10 May 2001) 10; ‘Jordan unfortunate arbitral awards).
Police Intensify Action Against Piracy’ Jordan Times (15 May 2001) 18; 63 Alexander Orakhelashvili The Position of the Individual in International
United States Embassy ‘U.S. Embassy Donates Two Vehicles to the Jordan Law’ (2001) 31 Cal W Int’l LJ 241, 258– 59 (In Abu-Dhabi Oil
Standards and Metrology Organization’ (March 2011) (JSMO will use Arbitration, the tribunal held that no domestic law can reasonably be said
these vehicles to inspect imported goods to ensure their compliance with to exist. The sheikh administers a purely discretionary justice with
Jordanian standards and to conduct market surveillance to identify and assistance of the Qur’an; and it would be fanciful to suggest that in this
confiscate counterfeit items). very primitive region there is any settled body of legal principles
55 Telephone Interview with Mazen Irsheidat, President of Jordan Bar applicable to the construction of modern commercial instruments. In the
Association (12 January 2012). Aramco arbitration, after it was ascertained that the law of the host State
56 In 2006, the US Court of Appeals for the Federal Circuit, which deals did not contain the rules on concessionary contracts, the Aramco
with the majority of intellectual property appellate disputes, enacted a tribunal referred to general principles of law, customs and practice in the
mandatory non-fee mediation program for parties seeking to appeal oil business and the notions of pure jurisprudence).
court decisions of intellectual property disputes: WL Dean ‘Let’s Make a 64 Abdel Hamid El Ahdeb Role of Arbitration in Dissolving Intellectual
Deal: Negotiating Resolution of Intellectual Property Disputes Through Property Disputes (2009) 12, available at shiac.com (in Arabic); Samir
Mandatory Mediation at the Federal Circuit’ (2007) 6 John Marshall Saleh ‘Commercial Arbitration in the Middle East: A Study’ in Shari’a
Review of Intellectual Property Law 365. and Statute Law (Graham & Trotman London 1984) 1 (stating that Arab
57 The Mediation Law for Settling Civil Disputes No 37, Official Gazette parties are usually reluctant to arbitrate in a foreign state and under
No 4595 (2006). foreign rules of procedure).
58 Ibid, Art 3. 65 Amr A Shalakany ‘Arbitration and the Third World: A Plea for
Reassessing Bias under the Specter of Neoliberalism’ (2000) 41 Harv Int’l
59 Ibid, Art 2.b.
LJ 419, 448– 57 (2000).
60 Ibid, Art 2.c.
61 Lynn Cole, Nancy Fashho and Ahmad M Yakzan ‘Jordan Leads Arab
Middle East in Mediation’ (2008) Association of Conflict Resolution:
International Section Newsletter 9.
Bashar H. Malkawi . The feasibility of ADR to resolve IP disputes in Jordan ARTICLE 153
procedure or method of proceeding; to the contrary, Arab validity and infringement should be kept out of the
parties view ADR as neutral means to settle disputes. purview of arbitration. Issues that arise in agreements
between private parties, such as those related to licens-
ing, may be resolved through arbitration. Arbitration
ADR as the way forward and other ADR means should be time-limited, confiden-
The overall picture of using arbitration and other ADR tial and assessed by experts in the relevant field.
methods to settle intellectual property disputes in Jordan Intellectual property disputes generally involve
is still emerging. There is a plethora of new issues. Jordan lengthy proceedings, tremendously costly and resource
did not extend arbitration expressly to intellectual prop- demanding, and provide one-sided outcomes. Arbitra-
erty disputes. Jordan’s intellectual property laws contain tion allows parties to bypass the backlogged judicial
no specific statutory language guaranteeing the arbitrabil- system in Jordan. Arbitration can start immediately
ity of copyright, trade mark or patent cases. Further, Jor- and parties can control the arbitration process. Flexibil-
danian Arbitration Law makes no specific provisions for ity exists in selecting arbitrators and procedures thus
intellectual property disputes. reducing time and saving money for the parties
Patent rights are property rights created by a sover- involved. Given the benefits, intellectual property prac-
eign entity and recorded in the Ministry of Industry titioners in Jordan should no longer turn automatically